RetailRetail - Trade Mark and Brand Protection

Retailers often overlook the protection of one of their key assets – their brand. We regularly see clients that have omitted to register their brands, business name or logo.

Trade mark registration is an effective and economic way of ensuring your brand is protected. Registration provides a safeguard against third party infringement and often acts as an effective deterrent against third parties considering or contemplating infringement.

On taking over the responsibility of any new portfolio, we invest time in your business to ensure that we appreciate the commercial framework within which your brands exist. We then conduct an audit of your existing registrations and applications and, in consultation with you, identify any areas where your existing protection is inadequate or unnecessary and correct this. A particular issue that we see regularly when taking on new retail clients is that they have failed to register their trade mark to cover their core retail services. Our audit will highlight any deficiencies.

We provide a comprehensive name selection and trade mark clearance service within the UK, European Union and throughout the world, to ensure that the adoption of any new name will not meet with any unanticipated obstacles.

We deal with the renewal of registered trade marks and design rights in our own dedicated renewals team, which allows us to treat the renewal process not merely as annuity but as an opportunity to review the relevance of existing registrations within their commercial context. We can also offer a service that provides worldwide surveillance of your rights.

We have considerable experience of conducting contentious trade mark and design registry proceedings around the world. We work closely with our colleagues in the IP dispute resolution group to deal with court proceedings and domain name disputes and can provide bespoke anti-counterfeiting services.

We can work with you to exploit your IP and maximise its value. This could range from the development and implementation of international protection and enforcement strategies through to branding strategy advice, development of agreements on delimitations and prior rights, licensing, franchising, purchase and merchandising contracts and agreements on transfers of trade marks and domains.

Notable deals / highlights

We act for many household names in the retail sector. We manage the portfolios for some of the leading European retailers so you can be assured that we have the expertise and capacity to commit the resources required to provide a high-quality proactive portfolio management service.

Our team has a solid track record in advising on all aspects of the exploitation of brands, including the licensing and assignments of trade marks to ensure that the full protection and earning capacity of the brand is realised.

We conduct complex cases before all the UK and EU tribunals, and currently have cases before the UK-IPO, the OHIM, the High Court in London, the European Court of Justice and the Courts of various countries as we manage the trade mark disputes in many other jurisdictions.